Ex Parte Grandison et al

Patent Trial and Appeal Board

May 31, 2017

12468738 (P.T.A.B. May. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/468,738 05/19/2009 Tyrone W.A. Grandison ARC920080085US1 1475
67232 7590 06/02/2017
TANTOR TOT RTTRN T T P - TRM ART DTVTSTON
EXAMINER
20 Church Street NIGH, JAMES D
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TYRONE W.A. GRANDISON, KUN LIU,
EUGENE MICHAEL MAXIMILIEN, and EVIMARIA TERZI
Appeal 2015-007888
Application 12/468,7381
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tyrone W.A. Grandison et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and
19, which are all the claims pending and rejected in the application on
appeal. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND OF REJECTION.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 1.
Appeal 2015-007888
Application 12/468,738
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for automatically managing
security and/or privacy settings of a profile from a social
networking site, comprising:
electrically communicating a user console computer with
a first social network computer remotely located at a first social
networking site, and accessing by the user console computer a
first profile stored on the first social network computer
corresponding to the first social networking site;
electrically communicating the user console computer
with a second social network computer remotely located at a
second social networking site different from the first social
networking site, and receiving by the user console computer a
portion of a plurality of security and/or privacy settings for a
second profile stored on the second social network computer
corresponding to the second social networking site;
comparing the plurality of security and/or privacy settings
for the first profile to the plurality of security and/or privacy
settings for the second profile;
determining from the comparison the portion of the
plurality of security and/or privacy settings for the second profile
to be incorporated into the security and/or privacy settings for the
first profile;
upon receiving by the user console computer the portion
of the plurality of security and/or privacy settings for the second
profile, automatically incorporating by the user console
computer the received portion of the plurality of security and/or
privacy settings for the second profile into a plurality of security
and/or privacy settings for the first profile; and
electrically communicating data to and from the user
console computer and the first social network computer based on
the received portion of the plurality of security and/or privacy
settings incorporated into the first profile.
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Application 12/468,738
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lynch et al. US 6,963,908 B1 Nov. 8, 2005
(hereinafter “Lynch”)
Vanasco US 2010/0274815 Al Oct. 28,2010
The following rejections are before us for review:2
1. Claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.3 Ans. 2—6.
2. Claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 stand rejected under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter that the Appellants regard as the
invention.4 Ans. 7—9.
3. Claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Vanasco and Lynch. Ans. 10-13.
ISSUES
Did the Examiner err in rejecting claims 1,3,5, 8, 10, 12, 15, 17, and
19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter?
2 The rejection of claims 1, 3, 8, 10, 15, and 17 under 35 U.S.C. § 102(e) has
been withdrawn. Ans. 14.
3 The Examiner inadvertently includes claims 4 and 11, which were
canceled, in the statement of the 35 U.S.C. § 101 rejection. Ans. 2.
4 The Examiner inadvertently includes claims 4, 11, 14, 18, and 21, which
were canceled, and inadvertently omits claim 8 in the statement of the 35
U.S.C. § 112, second paragraph rejection. Ans. 7.
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Did the Examiner err in rejecting claims 1,3,5, 8, 10, 12, 15, 17, and
19 under 35U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter that the
Appellants regard as the invention?
Did the Examiner err in rejecting claims 1,3,5, 8, 10, 12, 15, 17, and
19 under 35 U.S.C. § 103(a) as being unpatentable over Vanasco and
Lynch?
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
1. The rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
A. Abstract Idea
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the claims
at issue are directed to a patent-ineligible concept,” such as an abstract idea.
Alice, 134 S. Ct. at 2355. If so, in the second step, the elements of the
claims “individually and ‘as an ordered combination’” are considered to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. at 1297, 1298
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(2012)). Stated differently, the second step is a “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294).
We take independent claim 1 as representative of the claims on
appeal. Claim 1 is directed to a computer-implemented method for
automatically managing security and/or privacy settings of a profile from a
social networking site. App. Br. 18 (Claims App’x.).
The Examiner determined that claim 1 is directed to the abstract idea
of organizing human thought, explaining, inter alia, that the “claims can be
viewed as being directed towards the principle that the first user will most
likely have a similar view towards privacy and security as that of their
friends on the social network.” Ans. 3.
The Appellants disagree, contending that claim 1 is directed to the
relatively new concept of social networking, which is not an abstract idea
under Alice because it is not a long-prevalent and fundamental practice, and
it is not related to business commerce or finance. App. Br. 9—10. The
Appellants further argue the claim amounts to more than the mere abstract
idea of organizing human thought, because claim 1 requires receiving and
automatically incorporating privacy settings, and electrically communicating
data based on the incorporated privacy settings, which are concepts
inextricably tied to a computer. App. Br. 8—9; Reply Br. 2—5.
We find that the Examiner has the stronger position.
To analyze a computer-implemented method claim under Alice step
one, it is “relevant to ask whether the claims are directed to an improvement
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to computer functionality versus being directed to an abstract idea.” Enflsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). We “look at
the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
{quoting Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016).
In that regard, the alleged advancement over the prior art is
automating the task of setting user privacy settings for a social networking
site, thereby eliminating the need to manually set all components of the
privacy settings. Spec. 16—17. However, automating a manual process of
propagating settings from one computer to another “is not sufficient under
step one of Alice.” See Tranxition, Inc. v. Lenovo (U.S.) Inc., 664 F. App’x
968, 971 (Fed. Cir. 2016). We note the similarity between the subject matter
covered by claim 1 and the claims before the court in Tranxition.
Once this task of automatically incorporating privacy settings into a
profile has been completed, the claim further recites communicating data
based on the privacy settings. However, the Appellants acknowledge that
communicating data based on privacy settings is known in the art. Spec. 2.
Thus, we are not persuaded by the argument that because claim 1
requires receiving and automatically incorporating privacy settings, and
electrically communicating data based on the incorporated privacy settings,
claim 1 is necessarily not directed to an abstract idea.
We do not see that the Appellants have adequately shown that
receiving and automatically incorporating privacy settings, and electrically
communicating data based on the incorporated privacy settings is rooted in
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an improvement in computer technology. Cf. Tranxition, 664 F. App’x at
971-72.
Contrary to Tranxition's argument, the claim is not directed to an
improvement to computer functionality. There is nothing in the
claim to suggest that, once settings have been transitioned, the
target computer will be any more efficient. Cf. Enfish, 822 F.3d
at 1338. The claim merely “transitions” data from one computer
to another and thus automate the migration process. Digitech
Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014). Therefore, the claim is directed to the
abstract idea of migration, or transitioning, of settings.
Id.
Under Alice step two, we must next determine whether claim 1
contains “an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357
(quoting Mayo, 132 S. Ct. at 1294, 1298). The Appellants contend the
numerous technical operations executed by the electronic user console
computer and the different electronic social network computers presently
recited in the claim amounts to something more than a mere abstract idea
involving a human process. Reply Br. 3^4. We do not agree. Although “a
human might apply an abstract idea in a different manner from a
computer . . . [w]hat matters is the application. ‘Stating an abstract idea
while adding the words “apply it with a computer’” will not render an
abstract idea non-abstract.” Tranxition, 664 F. App’x at 972 (citing Alice,
134 S. Ct. at 2359).
Here, the claimed steps of “receiving” security settings, “comparing”
settings for a first and second site, “determining” which settings to
incorporate, and “automatically incorporating” the settings into the first site,
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Application 12/468,738
both individually, and as an ordered combination, are common computer
functions that add little to transform the abstract idea into an inventive
concept. The Appellants do not adequately explain what elements in the
claims, both individually, and as an ordered combination, suggest an
improvement in the functioning of the computer itself or an improvement in
any other technology such that claim 1 amounts to significantly more than to
be on the abstract idea itself. In the Specification, the Appellants describe
various algorithms for comparing privacy settings and calculating privacy
scores (see, e.g., Spec Tflf 23—25, 35—36). But these algorithms are not
claimed. Claim 1 is much broader, merely describing “a generic computer
implementation, using ‘routine, conventional activities,’ of the abstract idea
[of transferring settings between computers], ‘which is insufficient to
transform the patent-ineligible abstract idea into patent-eligible subject
matter.’” Tranxition, 664 F. App’x at 972 (quoting Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)).
For the foregoing reasons, we do not find the Appellants have shown
error in the rejection and accordingly we affirm the rejection of claims 1,3,
5, 8, 10, 12, 15, 17, and 19 under 35 U.S.C. § 101. Our reasoning differs
somewhat from that of the Examiner and, accordingly, we denominate the
affirmed rejection as a new ground of rejection.
B. Computer Useable Storage Medium
The Examiner finds a “computer useable storage medium,” as recited
in claim 15, and concomitantly in claims 17 and 19 that depend from claim
15, encompasses transitory media and, therefore, is not patent eligible. Ans.
6, 18—19 (citing Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
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(precedential)). The Appellants have not provided a substantive response to
this rejection. See App. Br. 7—10; Reply Br. 2—5. Accordingly, it is
summarily affirmed. See 37 C.F.R. § 41.37(c)(l)(iv).
2. The rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter that the
Appellants regard as the invention.
A. Automatically Incorporating
The Examiner finds claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 are
indefinite because “automatically incorporating” the security/privacy
settings is a relative phrase that makes the scope of the claim unclear as to
what actions are fully automated and what is being guided by user
interaction with the computer console. Ans. 7, 19—20. A decision on
whether a claim is indefinite under 35 U.S.C. § 112, second paragraph,
requires a determination of whether one of ordinary skill in the art would
understand what is claimed when the claim is read in light of the
specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350
(Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 15676 (Fed. Cir. 1986). Here, we agree with the Appellants’
contention that, in light of the Specification, a skilled artisan would
understand “automatically incorporating” the settings by user console means
the user privacy settings can be incorporated by the console into the social
networking profile, without the user having to set manually all components
of the privacy settings. App. Br. 10-11; Reply Br. 5 (citing Spec. H 16—
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175). Thus, with regard to the phrase “automatically incorporating,” we do
not sustain the rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 under 35
U.S.C. § 112, second paragraph.
B. The remaining 35 U.S.C. § 112, second paragraph,
indefiniteness rejections.
The Examiner finds claims 1,3, 5, 15, 17, and 19 are indefinite due to
the limitation “electrically communicating a user console;” claims 15, 17,
and 19 are indefinite due to the term “consul;” and claims 5 and 19 are
indefinite due to the limitations “a plurality of profiles” and “determining by
the computer.” Ans. 7—9, 20-21. The Appellants have agreed to amend the
claims to overcome the indefmiteness issues, should prosecution continue.
Reply Br. 5—6. Therefore, we summarily affirm these rejections of 1, 3, 5,
15, 17, and 19 under 35 U.S.C. § 112, second paragraph. See 37 C.F.R.
§ 41.37(c)(l)(iv).
3. The rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 under 35
U.S.C. § 103(a) as being unpatentable over Vanasco and Lynch.
The Appellants argue claims 1, 3, 8, 10, 15, and 17 as a group. See
App. Br. 12—15. We select independent claim 1 as the representative claim
for this group, and the remaining claims 3, 8, 10, 15, and 17 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants contend the combination of Vanasco and Fynch does
not teach “comparing” security/privacy settings for a first social networking
profile to security/privacy settings for a second profile, and “determining
5 Paragraphs 16 and 17 of the originally filed application correspond to paragraphs 20—21 of the published
application.
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from the comparison” a portion of the settings for the second profile to be
incorporated into the first profile. App. Br. 12—14. Specifically, the
Appellants argue Vanasco is directed to a system that performs online
spidering, or data mining, to index user identities, which does not teach
comparing different security/privacy settings or incorporating such settings.
App. Br. 13—14; Reply Br. 6—8. The Appellants argue Lynch is related to a
server that compares the software installed on a first and second computer,
and allows a user to manually agree to purchase each software program that
is missing from the second computer, but Lynch is not directed to a social
network and does not cure the deficiencies of Vanasco. App. Br. 13—14;
Reply Br. 6—8. We do not find the Appellants’ contentions persuasive of
error in the Examiner’s rejection because they fail to address the rejection as
articulated by the Examiner.
Although we agree with the Appellants that Vanasco generally
teaches a data mining system (see, e.g., Vanasco 1157) and Lynch generally
teaches transferring and updating software to a new computer (see, e.g.,
Lynch col. 1,11. 18—27), the Appellants have mischaracterized the
Examiner’s combination of Vanasco and Lynch. We agree with the
Examiner’s finding that Vanasco’s computer system teaches a user console
computer that receives “a portion of a plurality of security and/or privacy
settings for a second [social networking] profile” by accessing an external
social network system (i.e., a second social networking site) on the user’s
behalf, discovering the user’s inter-personal relationships, such as friend,
family, or colleague (i.e., privacy settings), and importing the relationships
to the system. Ans. 22—24 (citing Vanasco 10, 36, 120-126). The
Appellants describe the claimed “privacy settings” as “controlling] what
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subset of profile information is accessible by whom” (Spec. 113). Vanasco
limits what user information can be shared based on the imported inter­
personal relationships (see Vanasco 1475), thus, we agree that Vanasco’s
relationships teach the claimed “privacy settings.” Ans. 22—24 (citing
Vanasco H 10, 36, 120-126).
The Examiner finds Vanasco does not explicitly teach the manner in
which privacy settings are selected to be incorporated into another social
networking profile, and relies on Lynch to teach this limitation. Ans. 24—25.
The Examiner finds, and we agree, that Lynch teaches the concept of
comparing the settings for a first application profile on one computer to the
settings for a second application profile on another computer. Ans. 25—28
(citing Lynch col. 11,1. 31—col. 12,1. 20). We agree that Lynch teaches
determining, from the previous comparison, a portion of the settings for the
second profile to be incorporated into the first profile, by prompting a user to
select the desired settings to be transferred between computers. Id. The
broadest reasonable interpretation, consistent with the Appellants’
disclosure, of the claimed computer-implemented method for “comparing”
and “determining” privacy settings does not preclude some interaction
between the user and the user console computer. Ans. 25; see In re Am.
Acad. ofSci. Tech. Ctr., 367 L.3d 1359, 1369 (Led. Cir. 2004) (“[T]he PTO
is obligated to give claims their broadest reasonable interpretation during
examination.”) Accordingly, we agree that combination of Vanasco’s social
networking system that transfers privacy settings with Lynch’s system for
comparing and transferring computer settings teaches the disputed
limitations regarding the “comparing” and “determining” steps.
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The Appellants further contend the combination of Vanasco and
Lynch does not teach “automatically incorporating by the user console
computer the received portion of the plurality of security and/or privacy
settings for the second profile into a plurality of security and/or privacy
settings for the first profile,” and “electrically communicating data to and
from the user console computer and the first social network computer based
on the received portion of the plurality of security and/or privacy settings
incorporated into the first profile.” App. Br. 12—13; Reply Br. 6—8.
Specifically, Appellants argue that Vanasco’s data mining operations do not
teach automatically incorporating settings, and do not control, limit, or
restrict the output and display of data from a first computer to a second
computer based on incorporated security/privacy settings. App. Br. 12—13;
Reply Br. 6—8. Appellants contend “Lynch requires substantial user input,
manipulation, and a specific environment, /. e., a purchased software
program,” which does not teach the claimed “automatically incorporating”
security/privacy settings for a second profile into the settings for a first
profile. App. Br. 13; Reply Br. 8—9. Appellants’ contentions do not
persuade us of Examiner error in the rejection.
As discussed supra, we agree that Vanasco and Lynch teaches
“determining from the comparison” the portion of the privacy settings to be
incorporated into the first profile, which may include some input from a
user. After the privacy settings from a second profile to be incorporated into
the first profile have been determined, both Vanasco and Lynch teach the
settings are automatically incorporated by a computer into the first profile.
The Examiner finds, and we agree, that Vanasco teaches a “push” style
syndication model, where the privacy settings from one profile are
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automatically incorporated by the computer system into a different social
networking profile. Ans. 24 (citing Vanasco Tflf 342—346). Lynch teaches
automatically incorporating settings from one computer into another, and
provides the estimated time it will take for the computers to complete the
transfer. Ans. 27 (citing Lynch col. 12,11. 14—20). We further agree with
the Examiner’s finding that Vanasco teaches using the incorporated privacy
settings to control the communication of data between the system’s user
console and the first social networking computer. Ans. 10—11, 24 (citing
Vanasco 1342; see also Vanasco 1475 (data is restricted based on
relationship privacy rules)). The Appellants also acknowledge that
communicating data based on privacy settings is known in the art. Spec. 2.
Therefore, we agree that the combination of Vanasco and Lynch teaches the
disputed limitations regarding “automatically incorporating” privacy settings
and “electrically communicating data” based on those privacy settings.
The Appellants contend the Examiner relied on impermissible
hindsight reconstruction when combining Vanasco and Lynch, because one
of ordinary skill would not have been motivated to incorporate Lynch’s
software comparing and purchasing system into Vanasco’s data mining
program without first learning of Appellants’ invention. App. Br. 14—15;
Reply Br. 9—10. Appellants do not present sufficient evidence that the
Examiner’s rejection is based on knowledge gleaned only from Appellants’
disclosure, or based on knowledge which was beyond the level of ordinary
skill in the art at the time. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971)). Here, the Examiner relied on Lynch to provide “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
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398, 417-18 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). Specifically, modifying the social networking system of Vanasco
with the method of transferring computer settings of Lynch would
“provid[e] an easy, fast and comprehensive transference of settings . . . while
considering modifications thereof based on compatibility, the selected
receiving device and user selections.” Ans. 28 (emphasis omitted) (citing
Lynch col. 2,11. 62—65). We find this reasoning for the combination to be
sufficient under KSR.
In the Reply Brief, Appellants contend the Examiner “provides no
reason or evidence that incorporating Lynch’s teachings into Vanasco would
yield predictable results, nor could be implemented without requiring] no
change in the system’s functionality.” Reply Br. 8—9. This argument is
entitled to no consideration because it was not presented for the first time in
the opening brief, and Appellants have not shown good cause why it should
be considered, as required by our procedural rule. See 37 C.F.R.
§ 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473, 1473—74
(BPAI 2010) (informative opinion) (absent a showing of good cause, the
Board is not required to address an argument newly presented in the reply
brief that could have been presented in the principal brief on appeal).
Thus, for the reasons stated supra, we sustain the Examiner’s rejection
of claims 1, 3, 8, 10, 15, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Vanasco and Lynch.
The Appellants argue the remaining dependent claims 5, 12, and 19
on the same basis as independent claims 1, 8, and 15. See App. Br. 15—16.
For the reasons stated with respect to claim 1, we sustain the Examiner’s
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rejection of claims 5, 12, and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Vanasco and Lynch.
CONCLUSIONS
The rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 under 35
U.S.C. § 101 as being directed to the non-statutory subject matter of an
abstract idea is affirmed, but denominated as a new ground of rejection.
The rejection of claim 15 and claims 17 and 19 depending from claim
15 under 35 U.S.C. § 101 as being directed to the non-statutory subject
matter, i.e. a transitory signal, is summarily affirmed.
The rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 under 35
U.S.C. § 112, second paragraph, as being indefinite due to the limitation
“automatically incorporating” is reversed.
The remaining rejections of claims 1,3,5, 15, 17, and 19 under 35
U.S.C. § 112, second paragraph, as being indefinite are summarily affirmed.
The rejection of claims 1, 3, 5, 8, 10, 12, 15, 17, and 19 under 35
U.S.C. § 103(a) as being unpatentable over Vanasco and Lynch is affirmed.
DECISION
The decision of the Examiner to reject claims 1,3,5, 8, 10, 12, 15, 17,
and 19 is affirmed, but the affirmed rejection under § 101 is denominated as
a new ground of rejection.
NEW GROUND
This decision contains a new ground of rejection pursuant to
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37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED: 37 C.F.R, § 41.500?)
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